Trademark Fundamentals: A Plain English Primer

67 questions on trademark fundamentals, answered and cited by the UpLaw editorial team.

• Can a color be a trademark?
• Can a common phrase be registered as a trademark?
• Can a generic word plus ".com" be a trademark?
• Can a slogan be a trademark?
• Can a sound or a scent be a trademark?
• Can a trademark protect against uses on completely unrelated goods?
• Can failing to use the ® symbol cost you money?
• Can identical trademarks coexist on different products?
• Can you own a trademark without registering it?
• Does buying a domain name give you trademark rights?
• Does using a brand name as a verb make it generic?
• Do trademark rights work the same way as patents and copyrights?
• Do you lose trademark rights by forgetting to use the ™ symbol?
• Do you need to know who makes a product for a trademark to work?
• How are geographic terms and surnames treated in trademark law?
• How did Jack Daniel's change the expressive use defense?
• How does a mark's placement on the distinctiveness spectrum affect registration?
• How does the strength of a mark earned at naming pay off later?
• How does the U.S. first-to-use system differ from the rest of the world?
• How do the ™, ℠, and ® symbols differ in what they signal?
• How do you prove secondary meaning?
• How is similarity of marks actually judged?
• If rights come from use, what does registration actually do?
• Is a trademark something you acquire once and keep?
• Is the shape of a product treated differently from its packaging?
• Is trademark law flexible about what form a mark can take?
• Should a business register both a word mark and a logo?
• What are the heavyweight factors in a likelihood of confusion analysis?
• What does it mean that a trademark is a promise of consistent source?
• What does the ™ symbol mean and when can you use it?
• What guardrails keep the dilution doctrine narrow?
• What happens when two businesses use the same unregistered name far apart?
• What is a certification mark?
• What is a collective mark?
• What is a descriptive mark and how can it become protectable?
• What is an intent-to-use trademark application?
• What is a suggestive mark and what is the imagination test?
• What is a trademark, in plain English?
• What is a word mark and why is it the most valuable form?
• What is genericide and which brands has it killed?
• What is the difference between an arbitrary and a fanciful mark?
• What is the distinctiveness spectrum and why does it matter most?
• What is the legal test for trademark infringement?
• What is the most expensive naming mistake new businesses make?
• What is the practical difference between a word mark and a design mark registration?
• What is the relationship between clearance and the confusion test?
• What is the ℠ symbol for?
• What is trade dress?
• What is trademark dilution and how does it differ from infringement?
• What kinds of things can never be trademarks?
• What makes fanciful marks easiest to clear and protect worldwide?
• What should a founder do before falling in love with a brand name?
• When can you use the ® symbol?
• Where do U.S. trademark rights actually come from?
• Which circuits use which confusion factor tests?
• Which trademark registration bars has the Supreme Court struck down?
• Why can generic terms never be trademarks?
• Why can't a functional feature be a trademark?
• Why did Congress rewrite the dilution statute in 2006?
• Why do brand managers worry about how the public uses their name?
• Why do certification and collective marks confuse people?
• Why does the confusion test cut both ways for a business choosing a name?
• Why does the law care about consumer perception rather than the owner's intent?
• Why is a brand often worth more than a company's physical assets?
• Why is the confusion standard about ordinary consumers rather than careful ones?
• Why is the line between descriptive and suggestive marks so important?
• Why is trade dress protection limited by the functionality bar?